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May 15, 2016 Vol. 71 No. 9 Back to Bulletin Main Page

SAUDI ARABIA: Court Gives Well-Known Status to Unregistered Trademark


On March 23, 2016, the Administrative Court of the Board of Grievances (BOG) in Saudi Arabia issued a judgment in the opposition case of Emami Limited v Ministry of Commerce and Industry (Appeal No. 9001/1/Q of 1435). In that case, the mark of ZANDU BALM & Design was declared to be well known in Saudi Arabia even though it was not registered there. Consequently directions have been issued to the trademark office to refuse a third party’s application to register a confusingly similar mark.

Opponent’s Well-Known Mark

of ZANDU BALM & Design

Confusingly Similar Mark

under Application No. 1435007395

 

In arriving at the decision, BOG noted that Zandu Balm’s mark was well known in Saudi Arabia because of its domestic use and proof of imports into Saudi Arabia, and several registrations in other countries. BOG also found that the applied-for trademark was similar in form and phonetics to the well-known mark of ZANDU BALM & Design.

While interpreting Article 2(j) of Saudi Arabia’s Law of Trademarks (promulgated by Royal Decree No. M/21 28 Jumada-I, 1423), BOG ruled that the basic principles of trademark law include protection of creation and invention of an idea or mark from other (infringing) similar marks. Even though Zandu Balm’s mark was not registered in Saudi Arabia, BOG noted that enough evidence was provided to prove the mark of ZANDU BALM & Design was well known in Saudi Arabia for goods in Class 5 prior to the offending application for a confusingly similar mark in the same class.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2016 International Trademark Association